EPLAW Patent Blog

UK – BMS v. Teva

Merck Sharp Dohme Corp and Bristol-Myers Squibb Pharmaceuticals Limited v. Teva Pharma BV and Teva UK Limited, High Court of Justice, Chancery Division, Patents Court, London, UK, 15 March 2012, [2012] EWHC 627 (Pat)

Merck Sharp Dohme Corp. and Bristol-Myers Squibb Pharmaceuticals (together “BMS”) applied for an interim injunction to restrain Teva from infringing EP (UK) 0 582 455. Teva applied to strike out the action in its entirety. 

UK – Industrial Self Adhesives v. Teknek

Industrial Self Adhesives Limited v. Teknek Limited, Sheila Hamilton, Stephen Mitchell, Harrison Goddard Foote and HGF Law, Patents County Court, London, UK, 8 March 2012, [2012] EWPCC 10

Industrial Self Adhesives (“ISA”) commenced proceedings for unjustified threats of patent infringement against the defendants in respect TH Group’s patent, EP (UK) 1 499 549. Since TH Group was not one of the named defendants, it joined the proceedings as an additional claimant to a counterclaim for infringement. ISA alleged the patent was invalid and TH Group applied to amend the patent to limit its scope and further distinguish it from the cited prior art. The application to amend was advertised by the UK Intellectual Property Office (UK-IPO), no further opponents came forward and the UK-IPO indicated that they had no comments to make in relation to the proposed amendments.

The parties subsequently settled the dispute but the issue of amendment remained outstanding. HHJ Birss QC held that despite the proceedings having settled it was appropriate to deal with the amendments in the Patents County Court rather than require TH Group to make a fresh application to the UK-IPO to amend the patent. HHJ Birss QC further held that the amendments sought by TH Group were allowable.

Read judgment in English here.

Headnote: Robert Fitt

NL - Core v. Lidl / Doctrine of Equivalence

Core Distribution Inc. v. Lidl Nederland GmbH, District Court The Hague, the Netherlands, 14 March 2012, Case number 377750 / HA ZA 10-3661

Core holds the EP 1 448 865 patent for an extending ladder and associated manufacturing methods. Core’s own telescoping ladder product is currently not on the Dutch market due to regulatory problems and Core accused Lidl of infringing the patent. Lidl defended itself primarily with non-infringement arguments but also filed a (conditional) counterclaim for revocation of the patent.

Core acknowledged in oral pleadings that Lidl’s product did not ‘literally’ comprise all the measures of the patent, because it lacked the collars surrounding the telescoping columns, upon which the rungs  are supposed rest in the collapsed state. Lidl’s product instead used 2 rubber ‘bumpers’ under each rung of the ladder, which land on the rung below it in the collapsed state.

UK - Gedeon Richter v. Bayer Pharma

Gedeon Richter plc v. Bayer Pharma AG, Court of Appeal, London, UK, 7 March 2012, [2012] EWCA Civ 235

Gedeon Richter (“Richter”) commenced revocation proceedings in respect of two of Bayer’s patents, EP (UK) 1 380 301 (“’301) and EP (UK) 1 598 069 (“’069”). Both patents related to immediate release formulations of the steroidal hormones drospirenone and ethinylestradiol for use as oral contraceptives. At trial, Mr Justice Floyd held:

(a)  claims 1 and 19 of ‘069 were invalid for obviousness but permitted amendment to delete claims 1 to 5 and make claim 19 dependent of claim 6

(b)  Claim 6 of ‘069 was not invalid for obviousness

(c)  Claim 1 of ‘301 was not invalid for obviousness

(d)  ‘301 and ‘069 were not invalid for added matter

Richter appealed the findings (b), (c) and (d) to the Court of Appeal but the appeal failed.

The Court of Appeal rejected the allegations of added matter against both patents as the common parent application taught generally that rapid dissolution ensured “good bioavailability”.

The Court of Appeal also rejected Richter’s obviousness attack on both patents as there was no evidence that the skilled person would have read the contents of the relevant prior art and there was no, or only the slightest, expectation of success based of the prior art.

Read the judgment in English here.

Head note: Robert Fitt

NL - Samsung v. Apple / FRAND

Samsung Electronics Co. Ltd v. Apple Inc. et al, joined cases, District Court The Hague, The Netherlands, 14 March 2012, Case numbers 400367 / HA ZA 11-2212, 400376 / HA ZA 11-2213 and 400385 / HA ZA 11-2215

Samsung recently accused Apple of patent infringement. The four patents that were invoked by Samsung in the four  proceedings before the District Court of The Hague relate to the 3G technology. Before discussing the infringement and validity of each of these patents, the Court ordered a hearing applicable to all four cases regarding Apple’s FRAND defense and its other preliminary defenses.

In this interlocutory judgment, the Court denies the injunction requested by Samsung.

The general FRAND statement made by Samsung in combination with the applying of the standard by Apple does (unlike Apple's arguments that it would) not mount to a contract. According to the Court Samsung does not have to assume in general that each user wants a FRAND license and not every user may assume that they by using the standard are contractually bound with Samsung. This is the more so since a discussion on what conditions are FRAND is possible.

The Court held that in view of the negotiations on the terms of a FRAND license between the parties, the request for an injunction by Samsung in light of the circumstances should be seen as an abuse of authority and/or contrary to the pre contractual obligation to negotiate in good faith. The Court held that it could not be maintained that Apple was not negotiating in good faith.

This, since the counter offer made by Apple and the way it was calculated was not unreasonable (though the Court explicitly did not state whether it was FRAND). The counter offer by Apple was calculated based on a cumulative royalty ceiling of an x (confidential) percentage, a proportional division of that ceiling over all 1889 declared essential patent families in the standard, a royalty base of 20% of the sales price of its end products and moreover was only limited to the Dutch parts of the four patents invoked by Samsung.

 

CJEU - Mono-SPC covers any medicinal use of protected product

European Court of Justice, 9 February 2012, Novartis AG v. Actavis UK Ltd., case number C-442/11

Within about 6 months after referral, the CJEU has already answered the questions referred to it by the English High Court concerning the interpretation of Articles 4 and 5 of the SPC-Regulation in the context of a dispute between Novartis and Actavis.  Novartis was the proprietor of an SPC for the product valsartan. This basic patent for this SPC was also, inter alia, directed to valsartan.  Actavis’ generic drug contained not just valsartan, but also another active ingredient, HCTZ. 

The CJEU now confirms that this amounts to an infringing use of valsartan. According to the court, it follows from Article 5 of the SPC-Regulation that an SPC confers the same rights as the basic patent it ensues from.  Since the basic patent gave Novartis the absolute right to stop unauthorised use of any product containing valsartan, the CJEU held that the same necessarily applies to the ensuing SPC, albeit within the limits of Article 4 of the SPC-Regulation: “if, during the period in which the patent was valid, the patent holder could oppose, on the basis of his patent, all use or certain uses of his product in the form of a medicinal product consisting of such a product or containing it, the SPC granted in relation to that product would confer on the holder the same rights for all uses of the product, as a medicinal product, which were authorised before the expiry of the certificate” (decision, § 20).

Read the decision (in English) here.  

Head note: Philippe de Jong

NL - Sandoz v. AstraZeneca / Seroquel

Joined cases Sandoz B.V. and Hexal AG v. AstraZeneca AB and Accord Healthcare B.V. and Accord Healthcare Ltd v. AstraZeneca AB, District Court The Hague, The Netherlands, 7 March 2012, Case numbers 397921 / HA ZA 11-1977 and 397925 / HA ZA 11-1978, with thanks to Willem Hoyng and Jeroen den Hartog, Hoyng Monegier, for sending in the case and a translation in English

Sandoz et al sought to invalidate AstraZeneca’s patent for a sustained release formulation of quetiapine (Seroquel). According to Sandoz et al., AstraZeneca’s patent lacked inventive step as on the priority date there would have been a strong motivation for the skilled man to  make sustained release formulation, with a reasonable expectation of success. The District Court of The Hague applied the following test:

“The District Court will take as its point of departure that in the assessment of the inventive step of the patent, also if the problem-solution approach is applied, the question must be answered as to whether the average skilled person - assuming all the knowledge at his disposal on the filing date - was motivated to develop a sustained-release formulation of quetiapine and whether he would have a reasonable expectation of success, i.e. that this would solve the objective problem. In this respect, motivation on the one hand and a reasonable expectation of success are communicating vessels, in the sense that if he is strongly motivated, a less-high expectation of success will be sufficient for the skilled person, whereas he will need a high expectation of success if he is not very motivated. In other words, what is a ‘reasonable’ expectation, depends on the level of motivation.”

In applying this test, the Court held that the motivation to make a sustained release formulation of quetiapine was very limited on the priority date. As the skilled man moreover did not have a high expectation that he could make a sufficiently efficacious sustained release formulation of quetiapine with success, the Court concluded that such formulation was not obvious on the priority date and denied the requested invalidation of the patent.

Read the decision (in Dutch) here.

Read the decision (in English) here.   

Head note: Geert Theuws

SE - Anza v. Rusta

Anza Aktiebolag v. Rusta AB, District Court of Stockholm, 16 December 2011, Docket No. T 15349-10

Invoking a Swedish patent for an integrated support device to paint brushes, Anza requested that the District Court should declare that Rusta would infringe the patent if selling products similar to its currently sold paint brushes with integrated support devices and be prohibited against penalty of a fine to continue selling such paint brushes. The alleged patent infringement was denied by Rusta, referring to the prior art as guidance to how the scope of the patent protection must be considered limited so as to not covering its products. The District Court concluded that the patent had not been infringed and denied the claims.

In the District Court's assessment, it was emphasized that the scope of patent protection is determined by the patent claims interpreted not only by its letter but also by taking into account the description. Upon interpretation of the patent claims, the District Court concluded that the person skilled in the art would understand the invention as different from the defendant's products. It was also noted that based on what had been invoked regarding the prior art, the scope of the patent protection should not be extended to cover the defendant's products.

Read the judgment (in Swedish) here.

Head note: Erik Ficks

BE - Claim for “guiding surface” is not limited to shape depicted in drawing

Germeau Carrière v. Core Distribution and Urban Sporting Goods, expedited proceedings on the merits, Liège court of appeal, Belgium, 21 February 2012, case number 2010/RG/1369  

The respondents (Core Distribution and Urban Sporting Goods) are the co-proprietors of a European patent for an “extending ladder and associated manufacturing methods” (EP 1 448 865).  One of the features of the patented ladder is that in contains columns to which rings are coupled with an interior guiding surface for contacting the exterior surfance of another column. The appellant, who was found to infringe the patent at first instance, argued that the claim should be construed to mean that the said guiding surface was flat and that, since its own guiding surface allegedly had a different shape, there could therefore be no infringement.

The appellant found support for its argument in the description (§ 42) and the drawings (figure 7) of the patent specification, which described the embodiment of figure 7 as “[columns] with … shapes including flat surfaces … so as to preclude relative rotation between the columns”. The court of appeal rejected this argument and held that, on proper construction of the claims, figure 7 only depicted one possible embodiment of the invention and that no such limitation could be read into claim 1 or any other claim of the patent. What was claimed was a guiding surface, not a flat guiding surface. The court thereby confirmed the first instance decision.

However, the court reversed the first instance decision to the extent that it held that a court adjudicating a patent claim in expedited proceedings on the merits could not order to the restitution of the costs of the saisie carried out prior to the start of the proceedings. The reason for this being that no damages can be awarded in expedited proceedings. According to the court of appeal, however, these costs do not amount to damages, but to procedural costs, and could therefore be reimbursed to the respondents in expedited proceedings, without needing to start separate genuine proceedings on the merits.

Read the decision (in French) here.

Head note: Philippe de Jong

BE - Belgian supreme court broadens literal infringement test (for claims with numerical features)

Nouvag v. Malak, Supreme Court, Brussels, Belgium, 3 February 2012, Case number C.10.462.F/1

The Belgian supreme court has upheld a 2009 decision of the Brussels court of appeal in which the Swiss company Nouvag was held to infringe a European patent (EP 971 754) for a liposuction apparatus registered in name of a Belgian doctor, Mr Malak.  The main claim of the patent was directed to a liposuction device comprising inter alia a cannula that moved in a specific way (nutation), whereby the movement had a vibration component and a translation component. According to the claim, this translation component had an amplitude between 2mm and 1cm. The amplitude of Nouvag’s cannula was 1,98 mm. 

According to the supreme court, this difference in amplitude, despite the numerical values in the claim, does not stand in the way of a finding of literal infringement.  The supreme court explains that, for there to be an infringement, it is not required that there is an identical reproduction of the invention. It is sufficient that the essential characteristics are reproduced. Secondary or superficial differences do not prevent infringement. According to the court, for a court to conclude that a difference is secondary or superficial under a literal infringement plea, it is not required to examine whether the allegedly infringing product presenting such a difference has an equivalent effect. The court declares that this also applies to the assessment of the infringement of patent claims with numerical features, as in the present case.

Read the decision (in French) here.

Head note: Philippe de Jong